`Filed: May 1, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`BIODELIVERY SCIENCES INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`RB PHARMACEUTICALS LIMITED
`Patent Owner.
`
`____________________
`
`Case IPR2014-00325
`Patent 8,475,832
`____________________
`
`PATENT OWNER SECOND AMENDED MANDATORY NOTICE
`INFORMATION UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`
`
`
`Case No. IPR2014-00325
`Patent No. 8,475,832
`
`I. REAL PARTY-IN-INTEREST
`
`
`
`The real parties-in-interest are RB Pharmaceuticals Limited (Patent Owner),
`
`the sole owner of U.S. Patent No. 8,475,832 (ʼ832 patent), and Reckitt Benckiser
`
`Pharmaceuticals, Inc. (RBP), the exclusive licensee of the ʼ832 patent in the U.S.
`
`Both companies are subsidiaries of the same parent company, Reckitt Benckiser
`
`Group plc. Patent Owner’s address is 103-105 Bath Road, Slough, UK. RBP’s
`
`address is 10710 Midlothian Turnpike, Suite 430, Richmond, Virginia.
`
`Pursuant to a written agreement with RBP, MonoSol Rx, LLC (MonoSol)
`
`has exclusive manufacturing rights under the ʼ832 patent and therefore is an
`
`implied, exclusive licensee thereunder. MonoSol is also the original assignee of
`
`the patent, and the named inventors were, and in some cases remain, MonoSol
`
`employees. To the extent these facts are sufficient to render MonoSol a real party-
`
`in-interest, Patent Owner also identifies MonoSol under 37 CFR § 42.8(b)(1).
`
`MonoSol’s address is 30 Technology Drive, Warren, New Jersey.
`
`II. RELATED MATTERS
`
`
`
`The ʼ832 patent has been asserted against Petitioner in Reckitt Benckiser
`
`Pharmaceuticals, Inc., RB Pharmaceuticals Limited, and MonoSol Rx, LLC. v.
`
`BioDelivery Sciences International, Inc., E.D.N.C. Civil Action No. 5:13-cv-760-
`
`BO. The ʼ832 patent has also been asserted in Reckitt Benckiser Pharmaceuticals,
`
`2
`
`
`
`Case No. IPR2014-00325
`Patent No. 8,475,832
`
`Inc., RB Pharmaceuticals Limited, and MonoSol Rx, LLC. v. Par Pharmaceutical,
`
`Inc., and IntelGenx Technologies, Corp., D. Del. Civil Action No. 13-1461-RGA;
`
`Reckitt Benckiser Pharmaceuticals, Inc., RB Pharmaceuticals Limited, and
`
`MonoSol Rx, LLC. v. Watson Laboratories, Inc., D. Del. Civil Action No. 13-1674-
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`RGA; Reckitt Benckiser Pharmaceuticals, Inc., RB Pharmaceuticals Limited, and
`
`MonoSol Rx, LLC. v. Alvogen Pine Brook, Inc., D. Del. Civil Action No. 13-2003-
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`RGA; and Reckitt Benckiser Pharmaceuticals, Inc., RB Pharmaceuticals Limited,
`
`and MonoSol Rx, LLC. v. Par Pharmaceutical, Inc., and IntelGenx Technologies,
`
`Corp., D. Del. Civil Action No. 14-422-RGA.
`
`U.S. Application No. 13/964,975, which is a continuation of U.S.
`
`Application No. 13/923,749 (now abandoned), which was a continuation of U.S.
`
`Application No. 12/537,571 (ʼ571 application, now the ʼ832 patent), is pending.
`
`U.S. Application No. 12/537,580, which was filed at the same time as, and shares a
`
`portion of the specification of, the ʼ571 application is pending and may also
`
`potentially be affected by a decision in the proceeding herein.
`
`
`
`
`
`3
`
`
`
`III. LEAD AND BACKUP COUNSEL AND SERVICE INFORMATION
`
`Case No. IPR2014-00325
`Patent No. 8,475,832
`
` Lead Counsel:
`James M. Bollinger, Esq.
`Troutman Sanders LLP
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`Tel: (212) 704-6113
`Fax: (212) 704-5954
`Email: james.bollinger@troutmansanders.com
`Registration No. 32,555
`
`Backup Counsel:
`Daniel A. Ladow, Esq.
`Troutman Sanders LLP
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`Tel: (212) 704-6218
`Fax: (212) 704-5929
`Email: daniel.ladow@troutmansanders.com
`Pro hac vice
`
`Counsel consent to electronic service at their email addresses.
`
`IV. PATENT OWNER PRELIMINARY RESPONSE
`
`Patent Owner filed a preliminary response on April 30, 2014.
`
`Dated: May 1, 2014
`
`
`
`
`
`
`
` ___/James M. Bollinger/
`James M. Bollinger
`Reg. No. 32,555
`
`
`________
`
`4
`
`
`
`Case No. IPR2014-00325
`Patent No. 8,475,832
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner
`Second Amended Mandatory Notice Information Under 37 C.F.R. § 42.8(a)(2) was
`served electronically via email on May 1, 2014, on attorneys for Petitioner:
`
`
`Danielle L. Herritt
`Kia L. Freeman
`McCARTER & ENGLISH, LLP
`265 Franklin Street
`Boston, MA 02110
`
`dherritt@mccarter.com
`IPR832@mccarter.com
`
`
`
`
`
`Dated: May 1, 2014
`
`
`
`
`
`
`
` ___/James M. Bollinger/
`James M. Bollinger
`Reg. No. 32,555
`
`________
`
`5
`
`
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